CANCELLATION No 14 845 C (INVALIDITY)

Angus Chemical Company, 1500 E Lake Cook Road, Buffalo Grove, Illinois 60089, United States of America (applicant), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Erbslöh Geisenheim GmbH, Erbslöhstr. 1, 65366 Geisenheim, Germany (EUTM proprietor), represented by B/S/H Rechtsanwälte, Berliner Allee 34-36, 40212 Düsseldorf, Germany (professional representative).

On 14/02/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 11 471 307 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 21/04/2017, the applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 471 307  . The application is based on, inter alia, European Union trade mark registration No 67 223 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR. It also claimed Article 59(1)(b) EUTMR, namely that the contested mark was filed in bad faith.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the signs as the goods are identical and the marks are similar. Furthermore, it claims that the earlier marks have a higher distinctiveness due to their reputation and that the contested mark was filed in bad faith. In support of its observations, the applicant filed evidence which will be listed and assessed further in the decision, if necessary.

The EUTM proprietor argued that there is no likelihood of confusion since the goods are different and the marks are only slightly similar. After checking the evidence filed by the applicant, the EUTM proprietor claimed that the applicant uses its marks for goods which are designated for industries such as leather, life science utilities, paints and coatings or water treatment and that are toxic for the beverage industry, the field of activity of the proprietor. As regards the bad faith claim, the proprietor considers that since the applicant invoked earlier registered rights in Germany and the EU, Article 59(1)(b) EUTMR is not relevant. It its view the mentioned article is applicable only in cases where unregistered rights are invoked. The EUTM proprietor filed also evidence in support of its arguments.

The applicant refuted the proprietor’s arguments and reiterated its previous arguments. It mainly stated that the proprietor errs when considers that the goods to be compared are the ones that appear in the evidence submitted by the applicant to prove its trade marks reputation, since the EUTM proprietor did not request the applicant to provide proof of use of any of the earlier marks.

In its reply the EUTM proprietor states that the evidence submitted by the applicant does not prove an enhanced distinctiveness, that the earlier signs are used as a company name and not as trade marks. This time the EUTM proprietor admits that the marks are similar and the contested goods are identical to some of the applicant’s goods, but still there is no likelihood of confusion since the relevant public is a highly specialised professional public with a high degree of attention.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s EUTM registration No 67 223.

1. The goods

The goods on which the application is based are the following:

Class 1: Chemicals for use in industry and manufactures; nitroparaffins and derivatives thereof and complementary chemical compounds; but not including fire fighting compositions.

The contested goods are the following:

Class 1: Calcium-enriched silicate mixtures for use in the treatment of beverages.

The EUTM proprietor initially claimed that there is no usage of the earlier mark in the foods industry let alone in beverage technology and that the goods are not similar as the industries in which the marks in conflict operate have no points in contact. Later on it claimed that in fact the contested goods are identical to chemicals for use in industry of the applicant.

The Cancellation Division agrees with the last argument and deems that the contested goods are indeed covered or overlap with the applicant’s broad category of chemicals for use in industry; but not including fire fighting compositions as the latter cover also chemicals used in the food industry.

For the sake of completeness the Cancellation Division points out that since the EUTM proprietor did not officially, expressly and unequivocally request the applicant to provide proof of use of its earlier rights, the goods that have to be compared are the goods for which the marks were registered. This is irrespective of the documents filed by the applicant as proof of the reputation/enhanced distinctiveness of its earlier marks.

In this regard, it is also worth noting that the examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations — where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial — the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.

For this reason, specific marketing strategies, and the actual use of the marks in general, are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods in question were marketed cannot be taken into account. Since these may vary in time and depending on the wishes of the proprietors of the opposing marks, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks (judgments of 15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). What matters are not the conditions under which the goods are marketed or which are actually the goods marketed or the services provided, but the descriptions of the goods covered by the marks in question (judgment of 15/10/2008, ALUMIX, T-305/06 - T-307/06, ECLI:EU:T:2008:444 § 61).

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the EUTM proprietor is right when considers that the goods found to be identical are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is indeed high, since the use of such substances can have serious consequences to health or environment.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The term ANGUS means black hornless breed from Scotland and will be generally understood with this meaning in both marks despite the special script in the contested mark; since this meaning has no relevance for the goods at issue it is distinctive. The earlier mark has no elements that are more dominant than other elements. As regards distinctiveness, it is clear that the word ANGUS is the distinctive element since the line underlying this word has no trade mark relevance and it will not be further mentioned in the assessment. The number 1516 placed on top right of the contested mark’s AnGus is written in smaller characters; due to its superscript position it might be seen less dominant than the word. Further, its distinctiveness is considered to be lower than that of the word, since it might indicate a special formula or a code.

Visually and aurally, both marks contain the letter sequence ANGUS which is written as one word in the earlier mark and as two conjoined words in the contested mark (AnGus). Nevertheless, in both cases the letter sequence is pronounced identically, in two syllables. However, they differ in the writing of these letters, bolded in the earlier mark and rather standard script in the contested mark (with the letters A and G in uppercase and the rest in lowercase) and the superscript number of the contested mark. It is considered that the marks are similar visually and aurally at least to an average degree.

Conceptually, as mentioned above, the marks refer to the same concept which has no relation to the relevant goods. Since the contested mark contains additionally a superscript number, they are just highly similar (and not identical) from a conceptual point of view.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Taking into account what has been stated above about the relevance of the line underlying the word ANGUS, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The relevant goods are identical and the marks are at least similar to an average degree visually and aurally. The earlier mark has a normal degree of inherent distinctiveness. The only relevant difference between the marks is the superscript number in the contested mark which, in the opinion of the Cancellation Division, is less important than the word element AnGus as already detailed in section c) above.

The contested mark could be perceived as belonging to an economically linked undertaking to the applicant’s company, or it could even designate a new line of products.

Considering all the above, there is a likelihood of confusion on the part of the public. It is clear for the Cancellation Division that the higher degree of attentiveness of the public cannot help in differentiating the marks in this case since the goods in conflict are identical and the marks are at least similar overall.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier EUTM leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR and Article 59(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Jessica LEWIS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.